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Victor International GmbH filed an EUTM application for the word mark VICTOR for the following goods and services:
Class 25: “Clothing for playing sports; sports shoes for badminton, squash and/or tennis; headgear, including sports headgear; gloves, including sports gloves (included in Class 25); accessories, namely headscarves, shawls, dress handkerchiefs, ties, belts and scarves; stockings”.
Class 35: “retail services, including via the Internet and/or by means of teleshopping programmes, in relation to sports shoes for badminton, squash and/or tennis”.
The application was opposed by Gregorio Ovejero Jiménez and María Luisa Cristina Becerra Guibert on the basis of a number of earlier Spanish trade mark registrations, the relevant mark for the purposes of this case being the figurative mark above right registered on 6 February 1989, for the following goods:
Class 25: “Clothing, footwear (except orthopaedic), headwear, all of them included in this class and with express exclusion of tights, socks, one piece knitwear, knickers, scarves, t-shirts, hoods, skullcaps, slips, jackets, girdles, pullovers, bed jackets, trousers, nappies and, in general, all kinds of knitwear creations”.
The Opponents were requested to provide evidence that their mark had been genuinely used in relation to all the goods registered. Only evidence of use in relation to “footwear (except orthopaedic)” was considered to have been established.
The Opposition Division viewed the marks as visually, phonetically and conceptually similar and concluded that there was a likelihood of confusion of the part of the public in the relevant territory, in this case Spain, with regard to those goods and services covered by the application.
The Applicant appealed the decision of the Opposition Division. The Second Board of Appeal subsequently dismissed the appeal. In their assessment they considered that:
- Genuine use of the mark had been proven in relation to “footwear (except orthopaedic)” in class 25.
- As the earlier mark was a Spanish registration the relevant public in Spain was made up of the public at large and professionals.
- The goods applied for in class 25 were partially identical and partially similar to “footwear (except orthopaedic)” of the earlier registration. Moreover, the applicant’s services in class 35 were also similar, to a low degree.
The Applicant appealed to the General Court which considered the following questions:
Do the marks shown in the evidence of use differ in elements which alters the distinctive character of the registered mark?
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The mark as registered is the figurative mark. The evidence of genuine use provided by the Opponents showed the mark used in differing forms:
The General Court held that the Board of Appeal was correct in their assessment that these marks reproduced the earlier registered mark. It found the earlier mark derives its distinctive character from its sole element, namely the word “victoria”, being in slightly stylised lettering which is not sufficiently distinctive in this case to be capable of being taken into account.
The Court stated that the additional elements added to the earlier mark in the forms in which it was used on the market did not have a distinctive or dominant character that altered the distinctive character of the earlier mark. The “v” in a black circle in marks (a) and (b) serves an ancillary position in the overall impression produced by the mark and will be perceived by the relevant public as a purely decorative element. The colour version of the mark does not alter the distinctive character of the mark as registered. The word element stands out from the white background and its arrangement and orientation remains faithful to the mark as registered. The colours will be perceived by the relevant public as purely ornamental.
In relation to the circular mark, the Court found this also represents the mark as registered. The word “victoria” is written in the identical font to that used in the registered mark. The round shape and the “v” at the centre, as well as the colouration will be perceived by the relevant public as purely ornamental. The Court said the proprietor of a registered trade mark can make variations to it which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods and services concerned.
Does the evidence provided establish genuine use of the earlier mark?
The General Court concurred with the Board of Appeal that genuine use had been demonstrated. The Opponent had submitted evidence including invoices for the relevant period; delivery notes; catalogues of their collections; press clippings containing advertisements from Spanish newspapers and magazines; information on their products from various websites; an invoice for advertising services. The Board of Appeal found that the products included in the catalogues were identified by codes, descriptions and colours which corresponded to those used in the invoices. This established a sufficient link between the mark and the products, despite the mark not being directly affixed to the shoes presented in the catalogues. Each piece of evidence should be analysed as part of the whole in order to determine the most likely and coherent meaning. Even if the probative value of an item of evidence is not decisive in itself it may be taken into account in the overall assessment of genuine use, such as where it corroborates other relevant factors of the case.
Is there any similarity between the goods and services concerned, or between the respective signs, and therefore a likelihood of confusion?
The General Court considered the arguments put by the Applicant that the marks were not similar but agreed with the Board of Appeal that a proper evaluation of similarity had been conducted by the Opposition Division. “Sports shoes for badminton, squash and/or tennis” were included in the broader category of “footwear (except orthopaedic)” covered by the earlier mark. It found these are not sold exclusively in specialist sports shops but can also be offered for sale in the same commercial establishments, including in shoe shops, department stores or supermarkets.
Similarly, “clothing for playing sports; headgear, including sports headgear; gloves, including sports gloves”; “accessories, namely headscarves, shawls, dress handkerchiefs, ties, belts and scarves”; and “stockings” were found to be similar to “footwear (except orthopaedic)”. The goods covered by the application have a similar purpose, that is to cover the human body, hide it, protect it and adorn it. Moreover, the goods are marketed in the same sales outlets and are often designed and manufactured by the same undertakings. Some have an aesthetic function by contributing to the external image of the relevant consumer, which may involve coordination of the various components at the design stage or when they are purchased. Furthermore, they are often sold in the same sales outlets, whether specialist or not, like superstores, which helps to facilitate the perception of a connection between those goods and to strengthen the impression that the same undertaking is responsible for manufacturing those goods. The relevant public will perceive a connection between the goods in Class 25 covered by the marks at issue and will believe that the same undertaking is responsible for manufacturing those goods.
The General Court confirmed that the principles applicable to the comparison of the goods also apply to the comparison between the goods and services. Although, by their very nature, goods are different from services, nevertheless they can be complementary and in certain circumstances, goods and services may be found to be similar. Complementary goods or services are those between which there is a close connection. One is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. In addition, according to the case-law, there is a similarity between goods and the retail services which relate to those goods. Therefore, “retail services, including via the Internet and/or by means of teleshopping programmes” covered by the mark applied for are intended to offer on the market “sports shoes for badminton, squash and/or tennis” which are identical to the “footwear (except orthopaedic)” covered by the earlier mark. The relationship between the retail services and the goods covered by the earlier trade mark is close in the sense that the goods are indispensable to, or, at the very least, important for the development of those services, which are specifically provided when those goods are sold. The objective of retail trade is the sale of goods to consumers. The services provided in connection with retail trade in respect of goods identical to the goods covered by the earlier trade mark are similar, having regard to the fact that they are complementary and generally have the same distribution channels.
On this basis the General Court upheld the decision of the Board of Appeal.